DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-19 are pending in the application.
This office action is in response to the amendment filed on 9/2/2025.
All previous rejection not reiterated in this office action are withdrawn.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-11, 13, 14 and 19 is/are rejected under 35 U.S.C. 102(a1) (a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhang (US2014/0242699). This rejection is rewritten to address the amendment.
Zhang teaches making a transgenic mice and/or rats expressing Cas9 knockin, wherein the knockin mice was generated with constructs that targets Rosa26 locus (paragraph [0167]). Zhang teaches delivering gRNA to said transgenic mice may cause genome editing in tissue specific manner (paragraph [0168]). Zhang teaches different promoter and delivery vehicle for different tissue, wherein AAV8 is useful for delivery to the liver (paragraph [0204]). Zhang teaches examples of genes may be modified by CRISPR, including liver proprotein convertase subtilisin kexin 9 (PCSK9), which is critical for downregulating hepatocyte LDL receptor expression (paragraph [0335]). Therefore, the teaching from Zhang anticipates the claimed invention of claims 1 and 3.
Regarding the transgenic mice and/or rats expressing Cas9 knockin, Zhang further teaches such transgenic mice with conditional expression of Cas9 may be used to cross with a mouse expresses Cre under tissue specific promoter, there should only be Cas9 in the tissues that also express Cre. This approach may be used to edit the genome in only precise tissues by delivering chimeric RNA to the same tissue (paragraph [0168]). Zhang also teaches AAV8 is useful for delivery to the liver (paragraph [0204]).
It would have been obvious to an ordinary skilled in the art that to assessing modification of all tissues following the generation of the Cas9 knockin mice to confirm that modification in fact occurred as intended. The ordinary skilled in the art would recognize that delivering AAV8 encoding gRNA to liver is preferred because Zhang specifically teaches AAV8 is effective for delivering to liver. Zhang also teaches AAV8 has been shown to have efficient targeting of liver and will be administered intravenously (paragraph [081]). Therefore, the invention of claim 1 and claim 3 would have been prima facie obvious to an ordinary skilled in the art at the time the application was filed.
Regarding claim 2, Zhang teaches an exogenous nucleic acid template, a donor, may be introduced into genome (paragraph [0574], [0577], and paragraph [0740]).
Regarding claim 4, Zhang teaches the founder mice are identified and genotyped by sequencing (paragraph [0738]).
Regarding claim 5, Zhang teaches including protein tag in expression cassette that expresses spCas9 (Figure 22A bottom).
Regarding claim 6, Zhang teaches a conditional construct that comprises a polyA signal upstream of hSpCas9, said signal being flanked by two loxP sites (Figure 26).
Regarding claim 7, it is inherent that the recombinase recognition sites in the expression cassette is Cre recombinase because Cre recognizes loxP.
Regarding claim 8, Zhang teaches the conditional Cas9 mouse may be crossed with a mouse expressing Cre under a tissue specific promoter (paragraph [0741]).
Regarding claim 9, Zhang teaches a conditional construct that comprises a polyA signal upstream of hSpCas9, said signal being flanked by two loxP sites, and the conditional Cas9 mouse may be crossed with a mouse expressing Cre under a tissue specific promoter (paragraph [0741]).
Regarding claim 10, Zhang teaches the Cas9 expression cassette further comprises a GFP separated from Cas9 by an P2A peptide (Figure 26).
Regarding claim 11, Zhang teaches for targeting Rosa26, the Cas9 expression cassette comprises Rosa26 short arm-Cas9 expression cassette-pGK-Neo-Rosa26 long homology arm-pPGK-DTA, which does not include fluorescent protein coding sequence (paragraph [0739]).
Regarding claim 13, Zhang teaches spCas9 is under control of mouse Mecp2 and rat Map1b (paragraph [0131]), which meets the limitation of being endogenous promoter of mouse and rat.
Regarding claim 14, Zhang teaches an example of Cas9 expression cassette operably linked to an exogenous, constitutive promoter, pCAG, as shown in Figure 26.
Regarding claim 19, Zhang teaches optimizing the Cas9 nuclease modification by changing a variable, a constitutive expression cassette vs. a conditional expression cassette for Cas9, and compare the modification of the target locus (paragraph [0740]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang.
The teaching from Zhang has been discussed above. However, Zhang does not specifically teaches the Cas9 knockin mice are heterozygous or homozygous.
It would have been obvious to an ordinary skilled in the art that the founder mice expressing Cas9 would be used to generate heterozygous and subsequently homozygous transgenic mice so that Cas9 expression would be stable and passed on to offspring. Therefore, the claimed invention of claims 16 and 17 would have been prima facie obvious to an ordinary skilled in the art at the time the application was filed.
Claim(s) 12, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, in view of Sharp (WO2016/049024, IDS).
The teaching of Zhang has been discussed above. However, Zhang does not teach the Cas9 expression cassette comprises 3’ splicing sequence (12), or in 5’ to 3’ (i) 3’ splicing sequence; and (ii) coding sequence and further a nuclear localization signals (NLS)(18), or changing variable such as gRNA (19).
Sharp teaches generation of a Rosa26-LSL-Cas9 knock-in transgenic mice comprising 3XFLAG-tagged Cas9, splicing acceptor site (3’ splicing sequence)( Figure 1A). Sharp also teaches in vitro testing of sgRNAs and provided a list of sgRNA being tested for each gene (page 104, paragraph [0214], and page 107-108, Table S1).
It would have been obvious to an ordinary skilled in the art that inclusion of a SA would integrate the Cas9 expression cassette into the intron 1 of Rosa26 in mice based on the teaching from Sharp. The ordinary skilled in the art would be motivated to include the SA in the Rosa26 targeting construct taught by Zhang to have stable integration of the construct into Rosa26. The ordinary skilled in the art would also optimize the genome modification by using different sgRNA as demonstrated by Sharp, which would have been a routine optimization process. Therefore, the claimed invention of claim 12, 18 and 19 would have been prima facie obvious to an ordinary skilled in the art at the time the application was filed.
Response to Arguments
Applicant alleges that Zhang does not teach 1) the claimed element of the Cas9 expression cassette being integrated into the first intron of the Rosa26 locus; 2) the claimed administration of AAV8-mediated delivery of gRNA to Cas9 knockin mice; 3) the claimed element of intravenous injection of AAV8 in the context of delivering gRNA to Cas9 knockin mice; and 4) the claimed element of assessing modification of a target genomic locus in the liver of Cas9 knockin mice. Applicant argues that the OA lists various disclosure from Zhang and then combines elements of different disclosures to conclude that Zhang anticipates the claimed invention. Applicant argues that Zhang discloses Cas9 knock-in mice and discloses AAV8, but the AAV8 disclosure is in a different context from the Cas9 knockin mice. Applicant points to paragraph [0204] of Zhang is in the context of packaging and delivering Cas9 in vivo, and referring to paragraph [0171]-[0177] of Zhang for such context. Applicant asserts that the context is delivering Cas9 coding nucleic acid molecules together with a gRNA, which belongs to different embodiments than the Cas9 knockin mice embodiments.
The above arguments have been considered but deemed unpersuasive. Contrary to Applicant’s assertion, Zhang teaches the claimed element of the Cas9 expression cassette being integrated into the first intron of the Rosa26 locus (see paragraph [0167]). While the paragraph does not specifically mention first intron, it states that one embodiment, the method of US Patent Publication No. 20130236946 assigned to Cellectis directed to targeting Rosa locus may also be modified to utilize the CRISPR Cas system of the present invention. ‘946 publication teaches the ROSA26 intron one is known to be a safe harbor for gene insertion (paragraph [0003]). Regarding arguments that elements 2)-4) is taken at different parts of the publication, Applicant is reminded the entire publication must be considered in totality. As discussed in above rejection, the teaching from Zhang clearly contemplates generating a Cas9 knockin mouse and/or rat, and assessing modification in target locus in various tissue would be necessary to confirm such targeted modification indeed occurred. The teaching that intravenous administration of gRNA by AAV8 vector would have been self-evident from the teaching of Zhang because Zhang specifically teaches administering AAV8 is an effective way of delivering nucleic acid to liver. The fact that paragraph [0813] teaches combined delivery of Cas9 and gRNA to liver is effective does not mean that AAV8 would not be able to deliver gRNA alone to liver. Even if Zhang does not specifically teaches intravenous administering AAV8 encoding gRNA only, an ordinary skilled in the art would recognize that Cas9 need not be administered when the mouse already expresses Cas9, while AAV8 would still be the vector choice for efficient delivery of gRNA to liver tissue.
Regarding the obviousness rejection, Applicant argues that the present application demonstrate unexpected results of 1) AAV8 delivery of gRNA alone vs. AA8 delivery of gRNA and Cas9; and 2) AAV8 delivery of gRNA vs. Lipid-Mediated Delivery and HDD, both method was disclosed by Zhang.
This argument is not persuasive because such comparison is irrelevant because picking one embodiment from prior art does not mean it also has advantage over another embodiment taught by prior art, that is methods for assessing modification in Cas9 knockin mice.
Therefore, for reasons discussed in previous office action and set forth above, the 102 and 103 rejection set forth above is still considered proper and thus maintained.
Allowable Subject Matter
Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CELINE X QIAN whose telephone number is (571)272-0777. The examiner can normally be reached M-F (8-4:00).
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/CELINE X QIAN/ Primary Examiner, Art Unit 1637
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